Joseph Bohi

Trademark Trial and Appeal BoardJul 7, 2010

No. 77507354 (T.T.A.B. Jul. 7, 2010)

Mailed: July 7, 2010 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Joseph Bohi ________ Serial No. 77507354 _______ Scott A. Daniels of Daniels Patent Law PLLC for Joseph Bohi. Mary Rossman, Trademark Examining Attorney, Law Office 109 (Dan Vavonese, Managing Attorney). _______ Before Quinn, Taylor and Bergsman, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Joseph Bohi (“applicant”) filed an intent-to-use application on the Principal Register for the mark SPORT BOARD, in standard character form, for “board games, namely a single player or multi-player game board with positionable game pieces and indicia on the game board representing different games,” in Class 28. Applicant disclaimed the exclusive right to use the word “Board.” The Trademark Examining Attorney refused to register applicant’s mark under Section 2(e)(1) of the Trademark Act of 1946, 15 U.S.C. §1052(e)(1), on the ground that THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77507354 2 applicant’s mark is merely descriptive. According to the Examining Attorney, the mark SPORT BOARD is merely descriptive because the mark “describes goods that are board games that include a game board depicting a sport and that follow rules similar to those of the sport so depicted.”1 (Emphasis in the original). A term is merely descriptive if it immediately conveys knowledge of a significant quality, characteristic, function, feature or purpose of the products it identifies. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). Whether a particular term is merely descriptive is determined in relation to the goods for which registration is sought and the context in which the term is used, not in the abstract or on the basis of guesswork. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words, the question is not whether someone presented only with the mark could guess the products listed in the description of goods. Rather, the question is whether someone who knows what the products are will understand the mark to convey information about them. In re Tower Tech, Inc., 1 The Examining Attorney’s Brief, unnumbered p. 3. Serial No. 77507354 3 64 USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). When two or more merely descriptive terms are combined, the determination of whether the composite mark also has a merely descriptive significance turns on the question of whether the combination of terms evokes a new and unique commercial impression. If each component retains its merely descriptive significance in relation to the goods, the combination results in a composite that is itself merely descriptive. See In re Tower Tech, Inc., 64 USPQ2d 1314 (SMARTTOWER merely descriptive of commercial and industrial cooking towers); In re Sun Microsystems Inc., 59 USPQ 1084 (TTAB 2001) (AGENTBEANS merely descriptive of computer programs for use in developing and deploying application programs); In re Putnam Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of new information services in the food processing industry). In this regard, we must consider the issue of descriptiveness by looking at the mark in its entirety. Common words may be descriptive when standing alone, but when used together in a composite mark, they may Serial No. 77507354 4 become a valid trademark. See Concurrent Technologies Inc. v. Concurrent Technologies Corp., 12 USPQ2d 1054, 1057 (TTAB 1989). Finally, if one must exercise mature thought or follow a multi-stage reasoning process in order to determine what product or service characteristics the term indicates, the term is suggestive rather than merely descriptive.” In re Tennis in the Round, Inc., 199 USPQ 496, 497 (TTAB 1978); see also, In re Shutts, 217 USPQ 363, 364-365 (TTAB 1983); In re Universal Water Systems, Inc., 209 USPQ 165, 166 (TTAB 1980). If the mark creates a “double entendre,” that is a strong indication that it is suggestive rather than descriptive. For our purposes, a “double entendre” is an expression that has a dual meaning. In re Tea and Sympathy Inc., 88 USPQ2d 1062, 1064 (TTAB 2008); In re Grand Metropolitan Foodservice Inc., 30 USPQ2d 1974, 1975 (TTAB 1994); see also In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382, 385 (CCPA 1968) (“The immediate impression evoked by the mark [SUGAR & SPICE] may well be to stimulate an association of ‘sugar and spice’ with ‘everything nice’” of nursery rhyme fame and not just the ingredients for baked goods). Serial No. 77507354 5 The Examining Attorney submitted the following evidence to demonstrate that the mark SPORT BOARD is merely descriptive: 1. The definition of the word “Sport” meaning, inter alia, “pastime: an active pastime participated in for pleasure or exercise.”2 2. The definition of “Game Board” meaning “a game played on a specially designed board.”3 3. Two active third-party registrations listed below for marks including the word “Sports” for board games registered under Section 2(f) or with a disclaimer of the word “Sports.”4 Reg. No. Mark Goods 2893829 NICK SPORTS (disclaimer) Games and plaything, namely, … board games 1389212 SPORTS ILLUSTRATED (2(f)) Equipment sold as a unit for playing board games. 4. An excerpt from the Board Game Beast website (boardgamebeast.com) promoting its “sport board game” 2 Encarta.msn.com attached to the September 30, 2008 Office Action. 3 Freedictionary.org attached to the May 15, 2009 Office Action. 4 May 15, 2009 Office Action. The Examining Attorney also submitted one registration issued under Section 44 of the Trademark Act and not use in commerce, as well as seven cancelled registrations. Serial No. 77507354 6 buyer’s guide.5 The website provides the following information: Our sport board game buyer’s guide is the MVP of your shopping season! Want a sport board game gift idea? We’ve got the best of them right here! Board games on a sport theme are a staple of childhood. Whether it’s cricket, soccer, baseball or hockey, we’ve got something here for you. The website advertises the sale of several sports related board games, including Pizza Box Football, Knockout Hockey, and Front Porch Baseball. 5. An excerpt from the Rate It All website (rateitall.com) rating “Sports Board games.”6 The website has the following introduction to the ratings: Currently sports video games, such as Madden Football or Fight Night from EA Sports are all the Rage (sic). But before video games, sports board games were how people simulated sports action. Let’s Rate and Discuss sports board games here. One reviewer of “Strat-O-Matic Baseball” from the website opines that “Strat-O-Matic Baseball” is “[a]rguably the most influential sports board game of all time which is featured in the Hall of Fame at Cooperstown.” 5 May 15, 2009 Office Action. 6 May 15, 2009 Office Action. Serial No. 77507354 7 6. An excerpt from Wikipedia identifying “Sports board games” as a “category” (“Board games by genre”) and listing numerous games.7 7. Copies of two patents from online sources with the titles “Team sport board game” and “Sports Board Game.”8 The abstract from United States Patent No. 5901956 describes the “Team sport board game” as “[a] game simulating a team sport which tests and improves the players’ knowledge of, for example, favorite teams, whereby players select play cards and alternately ask and answer questions.” The inventor provides the following summary of its invention: Brief Summary of the Invention The present invention is a team sport board game modeled to a team sport that can be played by at least two players. The game of the present invention includes a playing board, a game piece, dice, spin wheel, and a plurality of playing cards, each containing several questions and corresponding correct answers. The playing board, is designed and configured to depict the filed one (sic) which the game is played. In the preferred embodiment, the board symbolizes a football field. However, other fields, such as basketball, hockey, soccer, or the like, can be depicted. The playing board is 7 May 15, 2009 Office Action. 8 May 15, 2009 Office Action. Serial No. 77507354 8 fabricated to depict an actual playing field. To show that SPORT BOARD is not merely descriptive, applicant submitted photographs of its product.9 Applicant described its goods as follows: The Applicant’s good (sic) is an imitation playing field having a plurality of field lines, game markings and depictions drawn on the filed representing several different physically competitive athletic events namely representations of a football field, basketball court and a baseball field. Participants use pegs or game pieces representative of actual athletes, along with modified rules of play similar to those in the actual athletic event.10 Based on the above-noted evidence, we find that SPORT BOARD is merely descriptive of “board games, namely a single player or multi-player game board with positionable game pieces and indicia on the game board representing different games.” SPORT BOARD immediately describes and 9 Applicant’s March 30, 2009 Response. In his Brief, applicant also referenced excerpts from Joe Rosen, The Sports Law Blog (November 28, 2005) (sports-law.blogspot.com). The Examining Attorney objected to the references on the following grounds: (1) applicant did not submit the website but only identified the URL; (2) the proposed evidence was not timely filed; and (3) the conclusions in the blog appear to be drawn from the Government of British Columbia’s Ministry of Economic Development webpage so, among other defects, it does not represent the experience of the consumer in the United States. The objection is sustained and the references from the Joe Rosen, The Sports Law Blog have not been considered. 10 Applicant’s March 30, 2009 Response, pp. 1-2. Serial No. 77507354 9 indeed is used by others as the name of a particular type of board game (i.e., a simulated sport). Nothing in the term is incongruous, indefinite or ambiguous when considered in relation to applicant’s goods and, consequently, no imagination, cogitation or gathering of further information is necessary for customers to perceive the merely descriptive significance of SPORT BOARD. SPORT BOARD immediately describes the nature of the product. Applicant contends that “[t]he mark is incongruous and has a double meaning with respect to the consumer’s understanding of the true nature of ‘sport’ because the mark evokes an association of the goods with a single traditional athletic sport such as surfing, snowboarding or basketball whereas the actual goods are a board game of chance.”11 Applicant’s argument is not persuasive because it is based on the false premise that the issue of descriptiveness is based on the mark in the abstract instead of in connection with the goods set forth in the application (i.e., a board game). Thus, when considered in connection with board games, the mark does not evoke an association with an individual sport and it does not stimulate an association with anything else. Applicant’s 11 Applicant’s Brief, p. 13. Serial No. 77507354 10 reliance on In Colonial Stores, Inc. is misplaced because in that case the mark SUGAR & SPICE used in connection with bakery products had a dual meaning: ingredients and the nursery rhyme. 157 USPQ at 385. In this case, SPORT BOARD has one meaning: a sport board game. Decision: The refusal to register is affirmed.